We use cookies to customise content for your subscription and for analytics.If you continue to browse Lexology, we will assume that you are happy to receive all our cookies. For further information please read our Cookie Policy.

In its Decision, the Board found that while Petitioner had shown by a preponderance of the evidence that relied-upon Gittleman reference was a publication under U.S. patent law, Petitioner had not shown by a preponderance of the evidence that claims 5 and 13 are unpatentable. Accordingly, the Petition was denied. Patent Owner’s Motion to Exclude was denied as well.

Petitioner had sought inter partes review of claims 1-13 (all claims) of the ‘542 patent. The Board then instituted trial for claims 5 and 13 on the single ground of unpatentability based on obviousness under 35 U.S.C. § 103 in view of Porambo, Black, Gittleman, and Tsurushima. Patent Owner alleged that Gittleman was not a publication and therefore filed a Motion to Exclude which sought to have this reference removed from evidence.

The ‘542 patent relates to “an audio amplifier with a power amplifier and a digital signal processor (“DSP”) that is capable of receiving and storing at least one algorithm that defines a signal processing function and signal processing function parameters.” The Board found that in order “to be considered ‘prior art,’ the asserted references must have an effective date that predates the critical date of November 9, 1994.”

Patent Owner argued Gittleman should not be considered because it was not authenticated as a publication under Fed. R. Evid. 901 and 902. Petitioner, for its part, provided testimony of the librarian at the law firm of Petitioner’s Counsel declaring it was possible to purchase and download copies of AES papers from the AES E-Library website; that the librarian had purchased and downloaded copies of the Gittleman reference from that website; and that “search results” evidenced that AES indicated October 1, 1971 as being a publication date for Gittleman.

Taking the submitted evidence into account, the Board found “that Gittleman is what it appears to be – a paper categorized by the Audio Engineering Society as a ‘preprint’” – and that thus Petitioner had met its authentication burden under Fed. R. Evid. 901 and 902. The Board then turned to the issue of whether the self-authenticated preprint qualifies as a publication under U.S. patent law.

In this respect, Petitioner had relied “on the information printed on the cover page of [the] preprint, namely that it was ‘presented’ at an AES convention in 1971” in attempting to prove the publication date of Gittleman. Patent Owner, in reply, had that Gittleman should be excluded as because the relied-upon information on the cover page indicating that the paper was presented at a convention on October 5-8, 1971 was inadmissible hearsay evidence under Fed. R. Evid. 802. Petitioner, in response, argued that (1) the statement on the cover sheet of Gittleman was not hearsay, and that even if it was, (2) “it would come within the ancient documents (Fed. R. Evid. 803(16)) or the residual hearsay (Fed. R. Evid. 807) exceptions to the hearsay rule.”

The Board was not persuaded by Petitioner’s assertion (1). As found by the Board, while “Gittleman has been authenticated as a preprint maintained by AES, Petitioner relies on the truth of the matter asserted on the face of the preprint, i.e., that it was presented at the AES convention on the date stated on the cover page” and “[w]ithout the statement, there is no evidence that Gittleman actually was available, as a printed publication, at the convention or on any other particular date.” Nonetheless, the Board was persuaded by Petitioner’s assertion (2).

In particular, the Board found that “in this situation, the statement should not be excluded as hearsay, because it comes within two separate exceptions to the hearsay rule.” According to the Board, “[t]he preprint qualifies as an ancient document subject to Fed. R. Evid. 803(16), which applies to documents that are at least 20 years old and whose authenticity is established” and thus Gittleman, whose “preprint purports to have been presented October 5–8, 1971, more than 20 years ago[,]” was authenticated.

The Board also found that the preprint meets the requirements set forth in the residual exception to hearsay (Fed. R. Evid 807). Specifically, the Board found that Petitioner had shown that each of the following four requirements of Fed. R. Evid. 807 were met: “(1) the statement has equivalent circumstantial guarantees of trustworthiness; (2) it is offered as evidence of a material fact; (3) it is more probative on the point for which it is offered than any other evidence that the proponent can obtain through reasonable efforts; and (4) admitting it will best serve the purposes of these rules and the interests of justice.”

In view of the foregoing reasons, the Board concluded that the information on the cover page of Gittleman relating to the presentation of the preprint at the AES convention in question was admissible, and that Gittleman was therefore a publication suitable for consideration as prior art in this inter partes review proceeding. For the same reasons, the Board denied Patent Owner’s Motion to Exclude.

Turning to the obviousness ground, Petitioner was not successful in persuading the Board that “it would have been obvious to a person of ordinary skill in the relevant art to have a DSP in combination with a power amplifier, where the DSP receives a digital signal processing function and parameters and also receives detected current and voltage to calculate impedance or power.” Specifically, the Board was not persuaded that “one of ordinary skill in the art would take the analog output protection circuits and access the detected current and voltage inside those circuits, then input them into the DSP of Porambo or Black, rather than use the output protection scheme already disclosed in Black.” Instead, the Board concluded that “[c]laims 5 and 13 require detecting voltage and current values for the purpose of making a calculation” but that “[n]one of the cited references perform this task digitally or in analog.” The Board’s view that Petitioner had not demonstrated by a preponderance of the evidence that claims 5 and 13 are unpatentable led the Board to deny the Petition.